| Benefit Claims, Priority, Electronic Exchange of Documents |
Referenced Items (216, 217, 218, 219, 220, 221, 222, 223, 224, 225, 226, 227, 228, 229, 230, 231, 232, 233, 234) |
(216) Issues with certain priority documents retrieved from the European Union
Intellectual Property Office via the World Intellectual Property
Organization Digital Access Service
Summary
As part of the United States Patent and Trademark Office's (USPTO)
ongoing efforts to automate and enhance patent examination practices to
support robust and reliable patent rights and speed the issuance of
patents, the USPTO continues to support the exchange of priority documents
with other foreign intellectual property (IP) offices via the World
Intellectual Property Organization Digital Access Service (WIPO DAS). The
WIPO DAS is an electronic system that allows priority documents to be
securely exchanged between participating IP offices and allows applicants
to meet the requirements of the Paris Convention for certification in an
electronic environment. This notice provides information regarding recent
technical issues with WIPO DAS experienced by the European Union
Intellectual Property Office (EUIPO) and provides guidance for impacted
design patent applicants and owners.
Background
The EUIPO experienced technical issues with WIPO DAS that resulted in:
(1) retrieval of priority documents having an incorrect filing date on the
EUIPO certification page, but the correct filing date identified on the
WIPO DAS Certificate of Availability page and on the "Date of receipt"
identified on the underlying application; and (2) retrieval of a
Certificate of Registration when the design was registered, rather than the
priority document itself (that is, the copy of the original application
with a certification by the EUIPO).
Once alerted to the issues, the USPTO worked with the EUIPO to identify
the priority documents retrieved in U.S. applications and patents that were
impacted by the technical issues at the EUIPO. In January 2023, the EUIPO
made the corrected priority documents available through WIPO DAS and the
USPTO began retrieving the corrected priority documents in the identified
applications and patents. This corrective action was completed in April
2023.
The EUIPO has recently informed the USPTO that the technical issue
concerning the incorrect filing date on the EUIPO certification page was
resolved in August 2022, and that the technical issue concerning retrieval
of a Certificate of Registration was resolved in December 2022. Therefore,
priority documents retrieved from the EUIPO after those respective dates
should not have these issues. The EUIPO informed the USPTO of an update to
their system so that the priority document itself (that is, the copy of the
original application with a certification by the EUIPO) may be retrieved
through WIPO DAS, even after the Certificate of Registration is available.
Guidance for impacted design patent applicants and design patent owners
(1) Retrieval of priority documents that contained an incorrect filing
date on the EUIPO certification page
A. For pending design applications: In some of the impacted
applications, applicants may have been notified of an incorrect
filing date on the EUIPO certification page in an Office action by
the examiner or in a notice by the Patent Publications Branch. If
a response is still needed, applicants should clarify the record
by filing a response to the Office action or notice stating that
the incorrect filing date on the EUIPO certification page was due
to a known technical issue in the EUIPO and that the correct
filing date is identified on the WIPO DAS Certificate of
Availability page. Applicants may refer to this Official Gazette
notice in their response.
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US PATENT AND TRADEMARK OFFICE |
1517 CNOG 785 |
B. For design patents: No corrective action is needed in design
patents to address this technical issue when the design patent
includes the correct priority claim, the EUIPO priority document
was retrieved prior to patent grant, and the correct filing date
is identified on the WIPO DAS Certificate of Availability page. If
the priority claim was removed before the patent issued due to
failure to respond to a notice regarding the incorrect filing date
identified on the EUIPO certification page, patent owners may want
to consider filing a request for a certificate of correction under
37 CFR 1.323 to include the priority claim. The request should
explain that the incorrect filing date on the EUIPO certification
page was due to a known technical issue in the EUIPO and that the
correct filing date is identified on the WIPO DAS Certificate of
Availability page. Patent owners may refer to this Official
Gazette notice in the request.
(2) Retrieval of a certificate of registration when the design was
registered, rather than the priority document itself
A. For pending design applications: Applicants should carefully
review the record in any design applications that claim priority
to an application filed in the EUIPO to ensure that the correct
priority document from the EUIPO has been retrieved. The certified
copy which must be filed is a copy of the original foreign
application with a certification by the patent office of the
foreign country in which it was filed. See section 215, subsection
II, of the Manual of Patent Examining Procedure (MPEP) (9th ed.,
rev. 7.2022, February 2023). The Certificate of Registration is
not a copy of the original EUIPO application and, therefore, does
not satisfy the requirement for a certified copy. Note that if a
Certificate of Registration has been issued for the Registered
Community Design, the document that was retrieved as a result of
the corrective action by the USPTO will include both the
Certificate of Registration and the correct priority document.
In the rare situation where the application only contains a
Certificate of Registration, applicants should take steps to
ensure that the correct priority document is retrieved through
WIPO DAS or filed in paper. Applicants are reminded that if the
correct priority document is filed after the date the issue fee is
paid, the patent will not include the priority claim unless
corrected by a certificate of correction under 37 CFR 1.323. See
37 CFR 1.55(g). For questions about retrieval of a priority
document via the WIPO DAS Exchange, contact the Patent Electronic
Business Center (EBC) at 1-866-217-9197 (toll-free) or
571-272-4100 (local).
B. For design patents: In situations where the correct priority
document was retrieved after payment of the issue fee, but before
patent grant, and the patent does not include the priority claim,
the patent owner should submit a request for a certificate of
correction under 37 CFR 1.323. A petition under 37 CFR 1.55(g) is
not needed in this situation since the correct priority document
was received before the patent grant.
In situations where the correct priority document was retrieved
after the patent grant, the patentee should submit a petition
under 37 CFR 1.55(g) for delayed submission of a certified copy,
and, if the priority claim is not on the patent, request a
certificate of correction under 37 CFR 1.323. See section 216.01,
subsection I.A, of the MPEP.
Important reminders
In general, when claiming foreign priority, applicants are encouraged to
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US PATENT AND TRADEMARK OFFICE |
1517 CNOG 786 |
access the Patent Center at www.uspto.gov/PatentStatus as necessary to
confirm receipt by the USPTO of appropriate foreign priority documents.
Applicants relying on the retrieval process for electronic priority
document exchange continue to bear the ultimate responsibility for ensuring
that the correct priority document is filed during the pendency of the
application and before the patent is issued. See section 215.02(a) of the
MPEP.
For more information regarding the electronic priority document exchange
(PDX) program and WIPO DAS, see www.uspto.gov/PatentsPDX.
Contact information
For questions about retrieval of a priority document via the WIPO DAS
Exchange, contact the Patent EBC at 1-866-217-9197 (toll-free) or
571-272-4100 (local). For questions about filing a petition for delayed
submission of a certified copy under 37 CFR 1.55(g), contact the Office of
Petitions at 571-272-3282. For any other questions about this notice,
contact Erin M. Harriman, Senior Legal Advisor, at 571-272-7747, Eugenia A.
Jones, Senior Legal Advisor, at 571-272-7727, or Kristie A. Mahone, Senior
Legal Advisor, at 571-272-9016, of the Office of Patent Legal
Administration; or PatentPractice@uspto.gov.
July 22, 2023 KATHERINE K. VIDAL
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1513 OG 338]